Trademarks: What a R e they and how are they used?TM James R. Helgason, Jr. Benenati Law Firm, P.C. 2816 Bedford Road Bedford, Texas 76021 817-267-4529 [email protected] www.TrademarkAttorneyTexas.com www.BenenatiLaw.com Northeast Tarrant County Bar Association CLE Luncheon September 17, 2013 Trademarks: What a R e they and how are they used?TM Contents 1 Trademarks: What a R e they and how are they used?TM 2 1.1 Introduction.....................................2 1.2 What Law Governs Trademarks?.........................2 1.3 How Does a Mark Serve as a Trademark?....................2 1.4 What Can Be Protected as a Trademark?....................3 1.4.1 Trademarks, Trade Names, and Service Marks.............3 1.4.2 Certification and Collective Marks....................4 1.4.3 Trade Dress.................................4 1.4.4 Colors, Smells, and Sounds........................4 1.5 Establishment of Trademark Rights........................5 1.5.1 Priority...................................5 1.5.2 Trademark Registration..........................5 1.5.3 Trademark Classes.............................5 1.5.4 x1(a) vs x1(b) Applications: Current Use or Future Use?........6 1.5.5 Incontestable - What Every Registered Trademark Strives To Be...6 1.6 Infringement....................................6 1.6.1 Likelihood of Consumer Confusion....................6 1.6.2 Dilution...................................6 1.7 Defenses to Trademark Infringement or Dilution................7 1.7.1 Abandonment................................7 1.7.2 Fair Use, Nominative Use, and Parody..................7 1.8 Conclusion.....................................7 1.9 Trademark Procedure Flowcharts.........................8 James R. Helgason, Jr. 1 Trademarks: What a R e they and how are they used?TM x 1 Trademarks: What a R e they and how are they used?TM 1.1 Introduction A trademark is any logo, symbol, phrase, or word (or a combination) that identifies the source of goods or services. This allows a business to distinguish itself and its products in the marketplace from its competitors as well as protecting the public from \consumer confusion" as to the source of those goods or services. For example, take the famous \golden arches" for the restaurant chain, McDonald's. As you drive down the highway on your long road trip, screaming kids in the back seat, your stomach starts to growl; all you really want is some fast food. You're in a place you don't know, possibly in the middle of nowhere, then you see the \M" at the next exit. You know what you are likely in for: relatively clean bathrooms and food quality you expect in a place you are not familiar with. That is the power of trademarks, and that is what companies spend a lot of money on to protect.1 Trademarks can also protect other aspects of goods including its color or packaging. For example, Coca-Cola comes in a distinctive curved bottle. These features are referred to as a \trade dress". Trademarks serve to protect business and consumers. By making goods easy to identify, companies may be more inclined to increase the quality of the goods or services in order to create public goodwill for their brand. If a person wore shoes with the Nike \swoosh" and they fell apart after only a few uses, that customer may know to avoid shoes with a \swoosh" on them in the future. 1.2 What Law Governs Trademarks? Trademarks are governed by both state and federal statutory and common law. Trademarks are federally controlled by the Lanham Act2. For purposes of this introductory document, the focus will be on federal law and the Lanham Act as it provides the most extensive protection to consumers and business owners. Congress has delegated control over the registration and maintenance of federally registered trademarks to the United States Patent and Trademark Office (\USPTO"). 1.3 How Does a Mark Serve as a Trademark? A mark must be distinctive. A mark is \distinctive" if it is capable of identifying the source of a particular good or service. Federal courts categorize distinctiveness based upon the re- lationship of the product/service and the mark itself. The four categories of distinctiveness are: 1) arbitrary/fanciful, 2) suggestive, 3) descriptive, and 4) generic. 1Interestingly enough, McDonald's is not in the top 10 values for trademarks, according to Forbes Mag- azine (http://goo.gl/22cp2z). That honor belongs to Google, Inc.'s plain-word trademark for \Google", which was valued in 2011 at $44.3 billion! 2 Enacted July 6, 1946, codified at 15 U.S.C. x1051 et seq. James R. Helgason, Jr. 2 Trademarks: What a R e they and how are they used?TM The strongest mark is one that fits the first category; one that is arbitrary or fanciful; these are also sometimes referred to as \coined terms". These marks have nothing to do with the underlying good or service. For example, Apple's trademark logo has nothing to do with computers. Other classic examples of \arbitrary" trademarks are \Blackberry" (cell phones), \Camel" (cigarettes), and \Exxon" (petroleum products and services). \Suggestive" marks is the next category of distinctiveness. These are marks that suggest a characteristic of the good or service. Examples of suggestive marks are \Coppertone" (sun lotion), \Blu-Ray" (video discs), \Greyhound" (bus services), and \Q-Tips" (person hygiene products). Everything that fits the above categories are considered \inherently distinctive" and are rewarded with a lot of protection. The next category of distinctiveness is called \descrip- tive" marks. These are types of marks that describe the underlying good or service. These types of marks generally do not receive protection unless they acquire distinctiveness through a secondary meaning. Examples of registered marks that are descriptive, but have achieved distinctiveness are \World Book" (encyclopedias), \Lasergage" (tool), and \Fast Baud" (computer modems). Surnames are also traditionally treated in this category: \Hyatt Ho- tels" and \McDonald's" (however both of these marks have achieved secondary meaning). \Secondary meaning" means that the mark has become so distinctive that in the mind of consumers, the descriptive mark has separated itself from others in the class. The 5th Circuit has determined the following test to determine if a mark has achieved secondary meaning: 1) the amount and manner of advertising, 2) the amount of sales, 3) the length and manner of the term's use, and 4) the results of consumer surveys.3 The final category of marks are those that are deemed \generic" and are not considered trademarks. Even if a mark achieves secondary meaning, it cannot become a trademark. This is to discourage companies from trying to trademark a word that generically identifies a product or service. An example of a generic term that likely cannot be registered is the mark \stapler" for office products. There are examples of otherwise valid trademarks deemed to have become \generic". Classic examples of this happening are \Aspirin", and \Cellophane". Another (potential) example is \Xerox"; however, Xerox has spent a lot of money to convince consumers that \Xerox" is a brand of photocopiers; likewise, \Kleenex" brand tissues. 1.4 What Can Be Protected as a Trademark? 1.4.1 Trademarks, Trade Names, and Service Marks The classifications of marks that are registered (or unregistered) are either \trademarks", \trade names" or \service marks". Marks that serve to identify goods are referred to as \trademarks". Trademarks are letters and words, logos, pictures, slogans, colors, product shapes, sounds, 3Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983). James R. Helgason, Jr. 3 Trademarks: What a R e they and how are they used?TM or a combination of these. Service marks are the same thing as trademarks but are for services rather than goods. Trade names are the names for businesses that a business has either registered with a state's secretary of state or as they are commonly known to the public (an individual or company's \doing business as" registration). This provides certain protections against other companies using your trade name as their own. 1.4.2 Certification and Collective Marks There are types of trademarks that act as assurances to consumers and other companies as to the origin of a good or service. “Certification” marks are those marks that act to assure the public that an agreement or contract exists between a mark holder and a nation- ally accredited testing and certification organization. These types of marks may be used by any company whose goods or services comply with certain standards. The classic ex- ample of a certification mark is the Underwriters Laboratories (\UL") certification on goods. Traditionally, trademarks serve to advertise the origin of a good or service. On the other hand, \collective" marks allow a variety of companies to utilize the same mark in advertising their goods and services. Collective marks are only usable by companies in the membership to use them (as opposed to certification marks that are usable by any company). 1.4.3 Trade Dress A trade dress is a way to protect the characteristics or the visual appearance of a product or its packaging. Essentially, it is a design that creates a visual impression which functions like a trademark. Trade dresses serve to protect consumers from products designed or packaged in a way to imitate another. Examples of trade dresses are the design and layout of a magazine cover, the decor of a Mexican restaurant, and the color and shape of pill capsules. Trade dresses cannot be de jure functional, which means that the design of a product cannot be in such a way that competitors must use it in order to compete effectively. An example of this is a stapler: Swingline cannot receive a registered trade dress for their line of staplers for their \V" shape: that is de jure functional.